Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jun 30, 2021

2021001010 (P.T.A.B. Jun. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/588,273 05/05/2017 Juan Diego Ferre 14917.3218US01/402060USNP 8332
27488 7590 06/30/2021
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/30/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO27488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN DIEGO FERRE,
DEVI JALAKANDAPURAM VISWANATHAN, and
ROSHIN LAL RAMESAN
Appeal 2021-001010
Application 15/588,273
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL L. WOODS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 3.
Appeal 2021-001010
Application 15/588,273
2
CLAIMED SUBJECT MATTER
The claims are directed to sharing events with structured metadata.
Spec. ¶ 3. Claims 1 and 8, reproduced below, are illustrative of the claimed
subject matter:
1. A system for sharing events with structured metadata
comprising:
a processor;
a memory storage device including instructions that when
executed by the processor provide an event structurer configured
to:
receive a message transmitted from a sender to an original
recipient that is related to an event for the original recipient;
parse the message to identify metadata of the event;
create a calendar item for the original recipient based on
the metadata;
incorporate the metadata into the message;
receive a share action from the original recipient
identifying a new recipient and a portion of the metadata relevant
to the new recipient;
incorporate the portion of the metadata relevant to the new
recipient into a shared message; and
transmit the shared message to the new recipient.

8. A method for sharing events with structured metadata,
comprising:
receiving a share action identifying an event in a calendar
associated with an original recipient of a message from which the
event is based, a new recipient, and a portion of metadata of the
event relevant to the new recipient;
creating a shared message, the shared message including:
a message body;
an identifier for the new recipient; and
the portion of metadata of the event relevant to the
new recipient encoded in a machine-readable division of
the shared message to indicate that the shared message is
a shared event; and
transmitting the shared message to the new recipient.
Appeal 2021-001010
Application 15/588,273
3
REJECTIONS
Claims 1, 2,2 6–13, and 15–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Nelson (US 2011/0106892 A1, published May 5, 2011)
and Siegel (US 2014/0136630 A1, published May 15, 2014).
Claims 3–5 and 14 are rejected under 35 U.S.C. § 103 as unpatentable
over Nelson, Siegel, and Schnitman (US 2014/0337441 A1, published Nov.
13, 2014).
OPINION
Claims 1, 2, 6, 7, and 15–20
We are persuaded by the Appellant’s argument that Siegel fails to
disclose that the original recipient of the message from the sender shares or
otherwise forwards the meeting request to a new recipient. Appeal Br. 11.
The Examiner finds “Nelson does not explicitly teach a share action
from the original recipient identifying a new recipient,” and finds Siegel
teaches “a user sending an email to a second user with the metadata
concerning the meeting.” Final Act. 3. The Examiner then concludes an
ordinary artisan “would understand that the first user of Siegel can be the
original recipient of the instant application because a meeting attendee may
wish to re-assign the meeting to a subordinate, thus sending the meeting
information to the second user.” Id. at 3–4; see also Answer 4.
What the Examiner is admitting here is that neither Nelson nor Siegel
discloses a recipient (the second user) forwarding a message to a third user,
as claimed. Instead, the Examiner apparently is finding, without evidence,
that the original sender (the first user) in these two references could have

2 The Examiner includes claim 3 in the statement of rejection (Final Act. 2),
but the claim is actually rejected along with claims 4, 5, and 14 (id. at 9).
Appeal 2021-001010
Application 15/588,273
4
first received it, outside the disclosures of both references. This is pure
speculation, unsupported by any evidence in the record.
Therefore, we do not sustain the rejection of claim 1, because the
obviousness determination is conclusory. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). Because independent claim 15 recites substantially similar
requirements, we also do not sustain the rejection of claim 15, which was
rejected using the same rationale as claim 1. Final Act. 7. We also do not
sustain the rejection of claims 2, 6, 7, and 16–20 that depend from claims 1
and 15.

Claims 8–13
Independent claim 8 recites “creating a shared message, the shared
message including: a message body.” In claim 1, a system is configured to
“receive a share action from the original recipient identifying a new recipient
and a portion of the metadata relevant to the new recipient; incorporate the
portion of the metadata relevant to the new recipient into a shared message.”
Claim 8 thus includes the creation of a “message body” that is not recited in
claim 1. However, the Examiner finds “the claim recites elements
substantially similar to those recited in claim 1. Thus, the art and rationale
applied to claim 1 apply to claim 8.” Final Act. 5.
We are persuaded by the Appellant’s argument that the rejection is in
error because no citations are provided for the additional limitation not in
claim 1. Appeal Br. 12; see also Reply Br. 7.
Appeal 2021-001010
Application 15/588,273
5
Because a complete prima facie case of obviousness of claim 8 has
not been established, we do not sustain the rejection of claim 8, nor of
dependent claims 9–13.

Claims 3–5 and 14
The Examiner has not established on the record that Schnitman
remedies the shortcomings in the combination of Nelson and Siegel.
Therefore, we do not sustain the rejection of claims 3–5 and 14, for the same
reasons as for claims 1 and 8.
CONCLUSION
The Examiner’s rejections are REVERSED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6–13,
15–20
103 Nelson, Siegel 1, 2, 6–13,
15–20
3–5, 14 103 Nelson, Siegel,
Schnitman
3–5, 14
Overall Outcome 1–20

REVERSED